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[This two-part post has been co-authored by Kartik Sharma and Aditya Singh, analysing the Delhi High Court decision in Intercontinental Great Brands v. Parle Product Pvt. Ltd. In Part I, the authors analyzed the court’s consideration of intention in its assessment of passing off and trademark infringement. In Part II of the post, they assess the court’s finding on phonetic similarity between Fabio and Oreo and on the trade dress of the competing goods. Kartik and Aditya are 2nd-year students at NLSIU, Bengaluru, and had earlier written for us here, here and here.]
Dissecting the trade dress: commonality of the blue
Another significant facet of the court’s ruling relied on the blue packaging of Oreo biscuits that the court held Fabio to be copying from, for its own trade dress. In the court’s opinion, the blue colour of the packs used by defendant (Fabio) for its vanilla filled chocolate sandwich was ‘deceptively similar to the trade dress of the plaintiff‘s vanilla cream filled OREO chocolate cookie’(para 45.23). The court went into a detailed discussion on the concepts of infringement and passing off (paras 45. 18–45.22) and applied the test of a customer of average intelligence and imperfect recollection. This test, the court opined, would conclude that the distinguishing features of the packings do not suffice to dispel the confusion arising from the similarity of trade dresses.
The blue colour of Oreo packing is what underwrites the court’s finding of passing off in this case. Interestingly, the opposing counsel raised the plea of the trade dress being common to the trade. However, the court stated that ‘merely citing trade dresses of cookies manufactured by others, which may be similar to the trade dress of the plaintiff and of the defendant, cannot suffice to hold that the trade dress of the plaintiff‘s cookies is common to the trade’(para 45.26). The other brands might well have been copying Oreo’s trade dress. This, however, would only make them potential infringers, against whom Oreo is at liberty to move the court. The commonality to trade contention, according to the court, still remains unsatisfied. It had to be shown that the other manufacturers in question had adopted the trade dress before OREO cookies. The court doesn’t explain in detail the factors to be looked into in context of commonality to trade.
There is a very fundamental judicial oversight here. The association of the blue dress with Oreo biscuits was never established at all in the ruling by the plaintiffs. To make a case for passing off, the distinctiveness inquiry is extremely crucial to be settled. (See our previous post for detailed analysis on distinctiveness). However, the court failed to do so. Moving with the court’s reasoning as the guide, one could very well argue that the trade dress that Fabio was infringing and said to be passing off was not of Oreo’s, but rather of other brands, say Sunfeast Vanilla Creme. In this situation, Oreo can be replaced with Vanilla Creme and the argumentation would still remain intact. What is it that ties the blue coloured packing to Oreo specifically? The plaintiffs never answer that question. The court, on the other hand, imposes a burden on the defendants to show that the other brands had adopted similar trade dress prior to Oreo Cookies. In our opinion, the ball here ought to be in the plaintiff’s court to demonstrate the distinct nature of its packing.
The Christian Loubutin line of cases are a good illustration of the inquiry that is constitutive of a brand’s claim for distinctiveness on the basis of colours. In the aforementioned case laws, extensive material had been placed before the court to establish the distinctiveness of ‘red sole’ as a trademark that deserved protection against infringement and passing off. In Christian Loubutin v Pawan Kumar, the company referred to the fact of its colour being granted registration by Trade Mark offices around the world. Evidence related to extensive media coverage, global accolades, etc. was also adduced by them to support their claim. The plaintiffs in our case, however, do not establish the blue trade dress as being exclusively linked to the Oreo biscuits.
Adding to it is the ambiguous interpretation of s 17 by the court (para 45.25). The court agrees that s 17 of the Trademarks Act, 1999 curtails the right of the plaintiff and curtails the scope of the trademark from aspects that are common to trade. However, it ends by stating that “s 17 itself relates to ―the effect of registration of a mark”. We submit that the effect of trademark protection then should not extend to the blue dress which is common to chocolate biscuits with vanilla creams. As also observed in the Britannia judgment, there are common colours for similar products in the marketplace. For instance, multiple companies sell digestive biscuits in red and/or yellow packaging. In fact, Cadburys in the U.K. had to file a separate application to trademark their purple colour used for chocolate wrapping.
In Harrods Ltd v. Harrodian School Ltd and the relevant portion of Kirly on trademarks in the Britannia case, it was rightly stated that “brands do not have a monopoly over their getup or brand name” but rather their goodwill and that the role of get-up alone is limited in recognition. Colour of the dressing in such facts and circumstances should not be a relevant similarity.
The Rule of Syllables
A notable portion of the ruling went into a detailed inspection of the phonetics of the competing marks. The simple question was: ‘Are FABIO and OREO, then, phonetically similar?’ (para 45.5).
We would admit beforehand that this inquiry is a genuinely tricky one to conduct. The case law on this issue has been rather inconsistent, with decisions hinging on individual examinations into the syllables of competing marks. However, one proposition that has been seen in many rulings is the need to undertake phonetic analysis from a comprehensive standpoint. This entails the abandonment of an excessively microscopic approach to comparison. Of course, the scrutiny of syllables is crucial. The caveat is that one doesn’t terminate the inquiry therein. The words have to be ultimately considered as a whole to ascertain the possibility of deception or confusion.
In this context, the case of Johann A. Wulfing v Chemical Industrial and Reckitt and Colman v Medicross Pharmaceuticals offer valuable insights. Both cases highlighted the significance that first syllables hold in the creation of perception in the minds of the customers. The judgments cited with approval Kelly’s book on trademarks where the tendency of a person using English to slur the termination of words was referred to. The special significance of the first syllable is then utilized to find out the impact of the word as a whole. This is how the Bombay HC held Dispirin and Medispirin to be phonetically distinct words in Reckitt Coleman. Extending the same observations to our case, we think that Fabio and Oreo ought to be considered phonetically dissimilar. The court, in our opinion, merely reproduced precedents in its favour without addressing the fundamental issues concerning phonetics at hand. This facet is to be then read with other arguments raised by us earlier. To use the court’s frequent invocation of ‘average customer’, the findings ought to be opposite to what it ruled.
In this piece, we have broken down DHC’s backward reasoning wherein they consider intention as a relevant factor and based on that take the approach of outdated precedents which mandate focusing on similarities as opposed to dissimilarities. Intention both in passing off and by the statute remains an irrelevant factor. There also arise logical inconsistencies in invoking the intention of the junior. Post this, we further analyse the key elements which per the court made the two products deceptively similar. The first one being the blue trade dress, wherein we look at the shortcomings in the court’s analysis of associating the blue trade dress to be belonging to Oreo and placing the burden of proving the contrary on the junior. The second one being the syllables wherein the court considered ‘Fabio’ and ‘Oreo’ to be deceptively similar phonetically. Herein we argue on the emphasis of the first syllable.